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Patent Law and the Supreme Court: Certiorari Petitions Pending - 21 December 2015

WilmerHale compiles lists of certiorari petitions that raise patent-law issues. This page contains a consolidated list of all recently pending petitions, organized in reverse chronological order by date of certiorari petition.

Samsung Electronics Co., Ltd. v. Apple Inc., No. 15-777

Questions Presented:

Design patents are limited to “any new, original and ornamental design for an article of manufacture.” 35 U.S.C. 171. A design-patent holder may elect infringer’s profits as a remedy under 35 U.S.C. 289, which provides that one who “applies the patented design . . . to any article of manufacture . . . shall be liable to the owner to the extent of his total profit, . . . but [the owner] shall not twice recover the profit made from the infringement.”

The Federal Circuit held that a district court need not exclude unprotected conceptual or functional features from a design patent’s protected ornamental scope. The court also held that a design-patent holder is entitled to an infringer’s entire profits from sales of any product found to contain a patented design, without any regard to the design’s contribution to that product’s value or sales. The combined effect of these two holdings is to reward design patents far beyond the value of any inventive contribution. The questions presented are:

Where a design patent includes unprotected non-ornamental features, should a district court be required to limit that patent to its protected ornamental scope?

Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?

Did the Federal Circuit err by considering patent claims over which it had no subject matter jurisdiction?

Did the Federal Circuit err by misconstruing the 5th Circuit’s standard of review for appeals of a Judgment as a Matter of Law (JMOL), and, as a result, improperly assumed the role of fact finder and overturned a jury verdict of no anticipation?

Whether, in accord with the statutory language, historical interpretation, congressional affirmation, and general claim construction principles, there is a strong presumption against construing as subject to 35 U.S.C. § 112, Paragraph 6 claims that do not recite “means”?

Is the Court of Appeals for the Federal Circuit (“CAFC”) permitted to create a new protected class—a giant corporation—to take private property for public use without any compensation to the inventor, an icon of America Invents (who invented Web applications displayed on a Web browser, in ubiquitous use worldwide, from which the giant corporation has financially benefited excessively), by denying the inventor the protections of the Bill of Rights and 35 U.S.C § 282 of the Patent Act, thereby voiding the judgment?

Whether the CAFC erred in not honoring the law, after abridging liberty rights of a citizen, arbitrarily dismissing the appeal without a hearing or an opening brief or clear and convincing evidence from a giant corporation, depriving the citizen of patent property rights, was the citizen deprived of the protections of 35 U.S.C. § 282 of the Patent Act and the Bill of Rights, thereby voiding the judgment?

Whether the CAFC erred in not relieving a citizen of a final judgment for misrepresentation by a giant corporation or for any reason that justifies relief for a judge denying the citizen a hearing according to law, depriving the citizen of patent property rights, was Petitioner deprived of the protections of FRCP Rule 60(b)?

Whether the CAFC erred in abridging a citizen’s liberty rights so that she could not address her medical condition to which the CAFC had been given proper notice, exacerbating her illness and arbitrarily dismissing the appeal without a hearing or an opening brief, depriving her of her patent property rights without any compensation from a giant corporation, was Petitioner deprived of the protections of the Bill of Rights and 35 U.S.C § 282 of the Patent Act, thereby voiding the judgment?

Whether the CAFC erred in not requiring a judge to avoid actual impropriety and the appearance of impropriety in denying a citizen a hearing according to law, depriving the citizen of patent property rights without any compensation from a giant corporation, after abridging liberty rights of a citizen, was Petitioner deprived of the protections of 28 U.S.C. § 455, Canons 2 and 3 and the Bill of Rights?

Whether the Patent and Trademark Office could properly rely on the limitations period for judicial review in denying administrative review to correct its own acknowledged errors, resulting in the loss of rights guaranteed by Congress.

Whether the limitations period for judicial review of the Patent and Trademark Office’s final agency action is the six-year period made generally applicable by the Administrative Procedure Act, or a 180-day period that Congress established for review of an interim decision..